Protecting and profiting from your intellectual property, presented by CarterDeLuca for the mHealth Israel community.

1. Protecting & Profiting From
Intellectual Property
Presented by:
Jason B. Scher, Esq.
and
Edward Meagher, Esq.

2. Agenda
1. What is Intellectual Property (IP) and the Most
Common Types of IP?
2. Why does IP Matter?
3. The Patent Process
4. Intellectual Property Considerations for
Startups
5. Expedited Prosecution
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3. TYPES OF PROPERTY
Most companies own three different types of
property:
• Real property (e.g., buildings & parking lots);
• Personal property (e.g., office equipment,
computers & furniture); and
• Intellectual property (e.g., information,
technologies, formulas, brands, logos, designs,
photos, & music).
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4. 4
Intellectual property is a general term
for categories of rights in intangible
creations of the mind.
What is Intellectual Property?

5. Why Does IP Matter?
IP is a business asset
 Establishes protectable legal interests in the goods and
services sold by a company and the technology and
know-how used to produce them
 Has intrinsic value that may be sold, licensed or
leveraged for profit
 Builds brand awareness and loyalty among consumers
 Gives a company a competitive edge
 Drives innovation / creates jobs
 Enables a company to enter new markets and grow
market share
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6. 6
 Original works of
authorship fixed in a
tangible medium of
expression
 Term examples:
 Author’s Life + 70 years
 95 years from date of first
publication or 120 years
from date of creation (work
for hire)
Copyrights

7. WHAT IS A COPYRIGHT?
Copyright protects works of authorship that are:
• Fixed in any tangible form or medium of expression.
• Original in the sense that they are:
• Independently created by the author (or authors).
• At least minimally creative.

8. WORKS PROTECTED BY COPYRIGHT
Copyright protects both published and unpublished original
works of authorship, including:
• Literary works (e.g., books, periodicals, manuscripts, film, tapes and
computer programs).
• Musical works, including accompanying words.
• Dramatic works, including accompanying music (e.g., scripts and
screenplays).
• Pantomimes and choreographic works.
• Pictorial, graphic and sculptural works (e.g., fine, graphic and
applied art and art reproductions, photographs, prints, maps, models
and technical drawings).
• Motion pictures, video games and other audiovisual works.
• Sound recordings.
• Architectural works.

9. WORKS NOT PROTECTED BY COPYRIGHT
Copyright does not protect:
• Ideas, systems, methods or processes.
• US government works.
• Typefaces (although copyright protection is available for computer programs
that generate fonts and typefaces).

10. COPYRIGHT REGISTRATION
Registration is not required to establish federal copyright ownership.
However, [COMPANY] protects its copyrights by filing for registration in
the US Copyright Office because registration provides substantial
benefits, including:
• The ability to bring an action for copyright infringement.
• Recovery of attorneys’ fees and special categories of damages not
otherwise available in an infringement action.

11. 11
 Source Identifiers:
Word, name, symbol,
device, sound… to identify
the source of the goods
and distinguish products
 Branding!
 Lasts as long as you
continue to use it
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Trademarks

12. WHAT IS A TRADEMARK?
A trademark identifies which person or company is the source or origin
of goods and services and distinguishes the trademarked goods and
services from those made or sold by others.
Trademarks may take the form of:
• Names (e.g., CALVIN KLEIN® apparel and GEORGE FOREMAN® grills).
• Brands (e.g., COKE® soft drinks and APPLE® computers).
• Designs and symbols (e.g., Nike’s "Swoosh" design on footwear).
• Slogans (e.g., Wendy’s slogan WHERE’S THE BEEF® and De Beers’
slogan A DIAMOND IS FOREVER®).

13. EXAMPLE OF DESIGN AND WORD MARKS

14. WHAT IS A TRADEMARK? (CONT’D)
Trademarks may also take the form of:
• Color (e.g., the color of Owens-Corning’s pink fiberglass insulation).
• Sound (e.g., NBC Universal Media’s chimes).
• Scents (e.g., Hasbro's Play-Doh scent).
• Package, product or store design (e.g., the shape of a fragrance bottle or
the interior design of a restaurant).
Trademarks consisting of colors or package,
product or store designs, or combinations of
these features are commonly referred to as
"trade dress."

15. TRADEMARK REGISTRATION
In the US, trademark rights arise from use, not registration.
However, companies protect their trademarks by filing for federal
trademark registration in the USPTO because federal
registration gives the trademark owner many benefits, including:
• The exclusive right to use the mark nationwide in connection with
the goods or services covered by the registration.
• The right to use the registered trademark symbol ® to discourage
infringement.

16. 16
 Confidential business information that
provides a competitive advantage
Economic value
Cannot be generally known
Reasonable efforts to maintain secrecy
 Last as long as you keep it a secret
Reverse Engineered
Independent Discovery
Examples:
Trade Secrets
 Technical Information
(formulas, manufacturing methods,
computer software)
 Business Information
(sales methods, distribution methods,
consumer profiles, advertising
strategies, lists of suppliers and
clients)

17. TRADE SECRET PROTECTION
Trade secrets are not registered like patents, trademarks and
copyrights. Instead, the [COMPANY] expects you to protect its trade
secrets by making reasonable efforts to keep this information
confidential, for example, by:
• Never giving your passwords to anyone.
• Keeping hard copies of trade secret information in locked files or cabinets.
• Never giving confidential information to customers or other individuals
outside of the company unless:
– Authorized by management.
– The recipient has signed a written Non-disclosure Agreement.

18. Patents
Right to exclude others from making,
using, importing, offering for sale, or
selling your invention in the U.S.
In exchange for:
Disclosing your invention (not keeping it a secret)
Releasing your invention to the public AFTER the patent
expires
Types of Patents
Utility - functionality
Design - aesthetic appearance
Plant
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19. Why Do Patents Matter?
Exclusivity
Competitive advantage
Facilitate relationships with third parties
Monetization
Licensing
Assignment
Commercialization
Secure Financing
Attract Investors
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20. Why Do Patents Matter to the Startup?
Farre-Mensa, Joan and Hegde, Deepak and Ljungqvist, Alexander, What Is a Patent
Worth? Evidence from the U.S. Patent 'Lottery' (March 14, 2017). USPTO Economic
Working Paper 2015-5.
 Study covered 34,215 first time patent applications filed by startup
companies since 2001, with a final decision by the end of 2013.
 With a first patent grant, the average startup company experienced:
 Increase in employment growth of 54.5% over the next 5 years
 Increase in sales growth of 79.5% over the next 5 years
 Increase in the chance of securing funding from VCs by 47%
within 3 years
 By pledging the patent as collateral, increasing chance of
securing a loan by 76% within 3 years
 Double the odds of raising funding from public investors
through an IPO
 Increase in the number and quality of subsequent granted
patents

21. The Patent Process

22. What Can Be Patented?
35 U.S.C. § 101 – Inventions Patentable:
Whoever invents or discovers any new and useful process, machine,
manufacture, or composition of matter, or any new and useful
improvement thereof, may obtain a patent therefor, subject to the
conditions and requirements of this title.
The four statutory categories of invention exclude:
 Laws of Nature (e.g., gravity)
 Natural phenomena (e.g., isolated DNA)
 Abstract ideas (e.g., organizing human activity, mathematical
relationships, etc.)
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23. General Patent Requirements
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New
Non-
obvious
Useful
Target
New
 Not “prior art” /
already publicly
known, e.g., patented
or published
Non-obvious
 Obviousness
measures the
difference between
what is in the prior
art and what is
claimed as the
invention (e.g., the
prior art must not
suggest the
invention)
Useful
 Provides a
benefit to
society (e.g.,
has a real world
use or
application in a
field of industry)

24. The Patent Document
Background
Defines “state of art” at the time of
the invention and problems and
limitations which the invention will
solve or improve.
Description and Drawings
Describes the invention in sufficient
detail to teach a person of ordinary
skill in the art to make and use the
invention in layman’s terms
Claims
Particularly point out the subject
matter which the applicant regards
as the invention
Define the scope of protection of
the patent 24

25. U.S. Filing Process
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26. U.S. Filing Process
First Step: Conception of the invention
 The invention must be conceived, and the invention must be reduced to
practice
 Reduction to practice does not necessarily require a working model or system.
It merely demands that the concept can be shown to work, which can be
accomplished through detailed drawings, formulas, and the like.
Second Step: Patentability search (Optional)
 Patentability search is a search of prior art, which is conducted prior to drafting
a patent application.
 Patentability search helps:
1) in determining the patentability of the invention;
2) the patent drafter to write a patent application that better defines the
invention over the prior art;
3) speed up prosecution by preempting Examiner’s rejections; and
4) improve the defensibility of the future patent by ensuring that the Examiner
considers the most relevant prior art during prosecution.
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27. U.S. Filing Process
Third Step: File a provisional
application (Optional)
 Provisional application requires filing an application
including a specification and a drawing; however does
not require filing an application with a formal patent claim,
an oath or declaration or an information disclosure
statement (IDS).
 Provisional application has a pendency lasting 12 months
from the date the provisional application is filed.
Fourth Step: File a non-provisional
application
 In order for a non-provisional application to claim priority
from a provisional application, the non-provisional
application must be filed within the 12 month pendency of
the provisional application.
 An IDS must be filed within three months of filing the non-
provisional application or before the mailing of a first
Office Action on the merits.
 Optional – A PCT or Non-U.S. application should be filed
in conjunction with filing a non-provisional if the inventor
seeks to pursue foreign patent protection
Fifth Step: Patent prosecution
 On average, the duration of the patent prosecution
process last from 2-5 years.
 Office Actions and Responses: The USPTO will send a
first office action either setting forth the Office’s
arguments regarding the patentability of the application or
notifying the Applicant that the application is allowable.
The Applicant will response to the Office Action
accordingly. This interaction continues either until a
patent is granted or the Applicant has exhausted its right
to defend its application against the Examiner’s
arguments.
Sixth Step: Patent grant and
payment of issue and maintenance
fees
 If the Applicant is granted a patent, the issue fee must be
paid within 3 months from the date of the Notice of
Allowance.
 In order to keep the granted patent “alive” the patentee
must pay 3 maintenance fees at 3.5 years, 7.5 years, and
11.5 years after the date of issue.
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Provisional Applications
 Not examined or published
 Non-extendable 12-month pendency
 Establish a priority date for prior art
File a non-provisional application claiming priority to
the provisional application (does not affect patent
term)
Convert the provisional application into a non-
provisional application (affects patent term)

29. 29
Advantages of Using Provisional Applications
 Low cost compared to non-provisional applications
 Attorney time
 USPTO Filing Fees
 Get to the USPTO quickly
 Fewer formal requirements than non-provisional applications
 U.S. now operates under first-inventor-to-file regime
 Provisional can be used to establish a priority date
 Affords applicant 1 year to prepare and file a non-provisional
application and/or foreign applications
 Enables applicant to postpone decision to pursue
domestic/foreign patent applications (and associated costs)
 Explore value of the invention and decide whether it is worth pursuing
 Allows the use of “Patent Pending” on potentially covered
products

30. 30
Limitations Regarding Provisional Applications
 Any information not included in the provisional
application will not be afforded the benefit of the
provisional filing date
 Care must be taken to include any and all details
 Cautious approach: prepare the provisional application in
a manner that complies with same formal requirements
of a non-provisional application

31. Patent Cooperation Treaty (PCT) Filing Process
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32. PCT Filing Process
First Step: File a “priority” application
in your home country
 If filing a priority application in U.S. follow the
filing process discussed in previous slides.
Second Step: File a PCT application
 PCT application must be filed within 12 months
from the filing of the priority application; however,
the PCT application may be filed simultaneously
with the priority application.
 Filing a PCT application reserves the Applicant’s
right to enter over 150 countries that are
members of the PCT.
Third Step: File a separate “national
stage” application in each country or
region where the Applicant wishes to
purse patent protection
 Applicant must file the national stage application
within 30 or 31 months, depending on the
country, from filing dated of the PCT application.
Fourth Step: National stage
examination
 National stage applications are examination
under the laws and regulations of the country
where the national stage application was filed.

33. Public Disclosure
 As March 16, 2013, any patent application filed with the
USPTO will be subject to the America Invents Act (AIA)
first-to-file system.
 AIA 35 U.S.C. § 102 requires the filing of a patent
application prior to any public disclosure or within a 1-year
grace period from the initial public disclosure of the
invention by the inventor or a third party.
 If inventor fails to file a patent application within 1-year
grace period from the initial public disclosure, that public
disclosure will be deemed prior art for any future application
containing the same invention.
 In most foreign countries, if an invention is disclosed before
filing, the disclosure is deemed prior art.
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34.  Think about IP early and start developing an IP strategy
 Involve your patent attorneys
 File early, file often
 Determine what forms of IP are best suited for protecting your company’s
intellectual assets, products, and services
 Align IP strategy with business objectives
 Identify key events that will trigger patent filing deadlines
 Public Disclosure
 Release Date
 Sale or Offer for Sale
34
IP Considerations for Startups

35.  Develop an IP budget
 Prioritize patent application filings
 Consider whether provisional applications are appropriate
 Assess the field of technology
 Will your patent be valuable upon issue?
 Draft claims that protect existing and future markets
 Consider Fast Track Examination
 Identify who your customers are
 Build a unique and identifiable brand
 Conduct a trademark search before marketing and publicity
 File a trademark application
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IP Considerations for Startups

36. HOW DOES A STARTUP PROTECT ITS IP?
• Registering its copyrights and trademarks.
• Applying for patents on its inventions and discoveries.
• Keeping its trade secrets confidential and limiting their disclosure, including
information concerning any invention or discovery for which it may decide to
seek a patent.
• Obtaining signed Non-disclosure Agreements from vendors and other
business partners, and from employees under the terms of their
employment agreements.
• Engaging watch notice services to monitor new IP application filings by
other companies.

37. HOW DOES A STARTUP PROTECT ITS IP? (CONT’D)
• Marking its packaging, advertising, marketing materials and websites with
appropriate IP notices. For example:
Copyright notice for electronic and printed publications:
© 2020StartupName, LLC
Trademark notice for products, packaging and other materials:
[BRAND]® is a registered trademark of StartupName, LLC
.
OR, if the mark is not registered:
[BRAND]™ is a trademark of StartupName, LLC
.

38. HOW DOES A STARTUP PROTECT ITS IP? (CONT’D)
• Keeping an eye on the market and its competitors’ activities.
• Reviewing industry-specific trade papers, magazines and websites.
• Developing best practices for IP protection and training employees on the
subject.
• Enforcing its rights against infringers by sending cease and desist letters,
and when appropriate, commencing litigation.
• Publicizing enforcement victories through targeted press releases.

39. HOW DOES A STARTUP MINIMIZE THE RISK OF
INFRINGING OTHER COMPANIES’ IP RIGHTS?
• Conducting a thorough investigation to obtain legal clearance of all
IP prior to use.
• Implementing policies and guidelines to reduce infringement risk.
• Educating employees about Startup’s IP policies and guidelines.
• Training employees about the types of IP that are most relevant to
their jobs and industry.

40. Expedited Patent Prosecution
 The average patent application has a pendency of 2 to 4 years.
For many applicants, this time frame is unacceptable.
 To cater to the applicants who are in a hurry, the USPTO offers
several types of expedited examination.

41. Main Types of Expedited Examination
 Track One Prioritized Examination
 Patent Prosecution Highway
 Petition to Make Special

42. Track One Prioritized Examination
 Track One allows a patent applicant to receive a final disposition
within about one year or less (compared to 2-4 years for regular
examination) from the time Track One status is granted.

43. Patent Prosecution Highway
What is Patent Prosecution Highway (PPH)?
 (PPH) is a set of initiatives for providing accelerated patent
prosecution procedures by sharing information between some patent
offices. It also permits each participating patent office to benefit from the
work previously done by the other patent office, with the goal of reducing
examination workload and improving patent quality.
 Applicants can request accelerated processing of their patent application
at a second Patent Office, when a first Patent Office has already found
corresponding claims allowable.
 Second Patent Office can utilize the search and examination results of the
first Patent Office thereby avoiding duplication of work and to expedite
the examination process of the application in the second Patent Office.

44. PRIMARY PPH Members

45. Petition to Make Special without Fee
 A petition to make an application special may be filed
without a fee if the basis for the petition is:
– (1) The applicant’s age or health; or
– (2) That the invention will materially:
• (i) Enhance the quality of the environment;
• (ii) Contribute to the development or conservation of energy
resources; or
• (iii) Contribute to countering terrorism.

46. Other Petitions to Make Special with Nominal Fee
HIV/AIDs/Cancer – e.g., contributes to preventing AIDS or
Cancer.
Recombinant DNA – e.g., research in field of DNA.
Environmental Quality – e.g., enhance quality of
environment.
Energy – e.g., discovery of energy sources.
Counterterrorism
Superconductivity Materials
Biotechnology
Infringement - e.g., infringing product based on application
being sold.
Manufacture - e.g., prospective manufacture of product
following allowance.

47. THANK YOU
_____________________________________________________________________________________
Jason B. Scher, Esq.
+1 (631) 719-7029
jscher@carterdeluca.com
Edward Meagher, Esq.
+1 (631) 501-5708
emeagher@carterdeluca.com